The recent case of Forensic Telecommunications Services Ltd v West Yorkshire Police & Anor [2011] EWHC 2892 (Ch) has some interesting lessons for followers of database right and enforcers of copyright. It also highlights the distinction between database right and copyright.
Facts
Forensic Telecommunications Services Ltd (FTS) brought claims against West Yorkshire Police (WYP) and Mr Hirst, a detective employed by WYP, for infringement of copyright and database right and misuse of confidential information concerning a table of address data, referred to as the ‘PM Abs’ addresses.
The PM Abs addresses were needed to carry out physical extraction of data from the memory of Nokia mobile phones, where data deleted by the user is stored until it is overwritten. The addresses, consisting of two numbers representing start and end points, define the part of the memory where data is stored and vary as between models of phone. Nokia does not publish its PM Abs addresses, but it is possible to identify the addresses using two methods: trial and error, which is time consuming, or use of a ‘flasher’ tool which effectively erases all old data held in the memory and, whilst doing so, displays the address information.
FTS was set up to recover evidence from mobile phones and it developed related software which made the task easier. As Nokia mobile phones were received for examination, FTS ascertained PM Abs addresses for a considerable number of models and compiled lists of those addresses which were included in its software manuals.
The software was licensed to the security services but not to UK police forces. FTS agreed in June 2006 to extract and translate data from various mobile phones for WYP using the software to assist on a counter terrorism investigation. Mr Hirst of WYP worked with a member of the security services to examine the phones and said that he was given a list of three or four PM Abs addresses. He subsequently posted a list of 39 pairs of PM Abs addresses on a web site intended to act as an exchange for people who were interested in phone forensics, which gave rise to these proceedings.
Decision
Arnold J found that copyright did not subsist in the PM Abs addresses or in the table of addresses. If copyright had been found to subsist, WYP would have infringed that copyright. Database right, on the other hand, did subsist and had been infringed by WYP and further there was a breach of confidential information.
Copyright in the individual addresses
In referring to his own decision in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829, Arnold J reminded the court that copyright protects the skill, judgement and labour in devising the form of expression of a literary work and not in devising ideas and procedures. He found in this case that FTS’s key employee, Mr Bradford, who had ascertained the majority of the PM Abs addresses using the ‘trial and error’ method, had not used skill, judgement and labour in devising the form of expression of the individual addresses. Arnold J also referred to the ECJ’s judgment in Infopaq, Case C-5/08, where it was said that copyright subsists only in subject matter which is the expression of the intellectual creation of the author, which was not the case here. If the addresses could be said to be intellectual creations at all, they were Nokia’s intellectual creations.
Copyright in a database or other collection
Arnold J then considered whether copyright could subsist in the collection of addresses. He decided that the table of addresses was a database (albeit a simple one) as the addresses were systematically arranged into columns and rows and were ‘individually accessible’ as required under the Database Directive. There was some argument that data set out in a simple tabulation could not be ‘individually accessible’ but this was rejected.
However, as a database, the table was not protected by copyright as the selection and arrangement were not Mr Bradford’s intellectual creation (a requirement under the Database Directive if copyright protection is to be available for a database). There was no structure in the table to merit copyright protection.
Arnold J considered, obiter, whether the table could be protected by copyright even if it were not a database. He distinguished other cases concerning literary and musical works which required the exercise of sophisticated judgement, as well as other types of skill and labour. By contrast, this case was concerned only with a collection of numerical data, which was not planned to an overall design but was simply a set of numbers acquired over time placed into an obvious and basic form. No exercise of judgment had been made and FTS had not devised the form of expression to any material extent.
If this conclusion were wrong, Arnold J was of the view that copyright infringement would have occurred as a substantial amount of the work had been reproduced, measured both quantitatively and qualitatively. Further there was no ‘fair dealing for research’ defence available to WYP. While ‘close to the line,’ WYP’s activities did not amount to scientific research, and although their use was non-commercial, it could not be said to be ‘fair dealing’. Also, there could be no ‘innocence’ defence to a damages claim.
Database right
Article 7 of the Database Directive provides for the sui generis right, namely a ‘right for the maker of a database which shows that there has been a qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database’.
Although the skill, judgement and labour expended by Mr Bradford was not the right kind to attract copyright, Arnold J ruled that there was substantial investment on his part in obtaining the data, particularly by the ‘trial and error’ method, and there was also evidence of verification by FTS. Infringement occurred as Mr Hirst had extracted and reutilised a substantial part of the contents of the database, on both a qualitative and quantitative basis.
Breach of confidence
Arnold J ruled that the table did have the necessary quality of confidence. The information was valuable, and not in the public domain and FTS had emphasised when licensing to the security services that the product was confidential to FTS. Mr Hirst knew that FTS was a commercial supplier of forensic services and that the software was licensed to the security service but not to WYP. A reasonable person would have appreciated that the information was confidential. Posting the information on the web site and copying for WYP’s use constituted clear misuse.
Comment
This is an interesting case, particularly concerning database right. It will be a relief to database right owners to see that Arnold J applied protection to the significant investment in data which was not held electronically or arranged in a complex way, but appeared in simple tabular form. Arnold J noted that, while no defence had been argued based on WYP’s status as a law enforcement agency, it was regrettable that the case had progressed so far as to have expended considerable public funds.
Tom Scourfield is a Partner in the Intellectual Property team of the Commercial, Regulatory and Disputes practice at CMS Cameron McKenna LLP.
Lucy Kilshaw is a Senior Associate in the Technology and Litigation Group at CMS Cameron McKenna LLP.
